Distinctiveness and 3D Shape Mark Protection
Unique 3D shapes applied to products can act as important brand identifiers, and can be registered as trade marks. For example, the fluted Coca-Cola bottle, or the unique triangular shape of the Toblerone chocolate bars, are recognisable regardless of any branding appearing on the shapes.
However, 3D shape marks can be challenging to register. As with any trade mark, a 3D shape mark must be capable of distinguishing goods or services of one person from those of another person. As shapes are intrinsic to products, the threshold for distinctiveness for a 3D shape mark can be higher than for other marks. The 3D shape must be uncommon and differ from other existing shapes for the goods in the market and be recognisable as a unique badge of origin for the goods in the eyes of the relevant public.
Recently, the General Court of the European Union annulled the decision of the European Union Intellectual Property Office (EUIPO) and Board of Appeal in relation to the 3D shape of a lipstick, filed by Guerlain (“the Guerlain lipstick”).
The EUIPO had found that the Guerlain lipstick was not sufficiently distinctive from other lipsticks to permit registration, the decision being upheld by the Board of Appeal.
The trade mark is a three-dimension sign consisting in the shape of a lipstick, represented as follows:
However, the General Court annulled the decision, finding that the Guerlain lipstick shape was uncommon for a lipstick and differed from other lipsticks in the market, with the Guerlain lipstick having a boat hull shape, as opposed to cylindrical and parallelepiped lipsticks. The Guerlain lipstick also had a small oval embossed shape on it which contributed to its uncommon appearance, and the shape of it rendered it uncapable of being placed upright, which added to the uniqueness of the shape.
As such, the General Court found that the shape would be easily memorable and perceived to differ from what is considered to be normal and customary shapes for lipsticks.
In New Zealand and Australia, the filing of evidence of use to show acquired distinctiveness – to show that a 3D shape is memorable and capable of acting as unique badge of origin – will be required to support the registration of 3D shape marks.
If you would like to discuss your unique shape, please contact us.
Article written by Ingrid Seegers, July 2021
